Louis Vuitton’s metaverse-related trademark registrations offer valuable insight

More and more IP practitioners are wrestling with the question of whether to recommend that their clients file trademarks such that they are protected when it comes to the metaverse and non-fungible tokens (NFTs). While some are still reluctant to treat this issue seriously, the rising number of trademark applications in this metaverse mean that such they need to start paying proper attention or risk being left behind.

The adoption of metaverse technologies is still at an early stage, but it is envisaged as an independent virtual economy, enabled by digital currencies, and embracing Web 3.0 features such as NFTs. Therefore, increasing number of brands are preparing themselves to provide virtual goods and services.

An NFT – according to the definition provided in a proposed regulation on markets in crypto-assets by the European Parliament and the Council ― is a digital representation of a value or a right that uses cryptography for security and is in the form of a coin or a token or any other digital medium, which may be transferred and stored electronically using distributed-ledger technology or similar technology. That definition is slightly different to that recently presented by the EUIPO, which is narrower and more strict. This claims that NFTs should be treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items.

The EUIPO has presented its guidance on trademark applications for metaverse and NFT-related goods and services, and indicated that virtual goods are proper to Class 9 because they are treated as digital content or images. However, the term ‘virtual goods’ lacks clarity and precision, so must be further specified by stating the content to which the virtual goods relate (eg, downloadable virtual goods, namely, virtual clothing). For the office, the term NFT alone is not acceptable – the type of digital item authenticated by the NFT must be specified.

So far, there has been no equivalent communication from the Polish Patent Office, so it is reasonable to assume that it will follow the EUIPO’s guidelines. Polish IP practitioners can look to applications filed with the EUIPO or USPTO as there have only been a few filed with the Polish IP office. However, even in these few applications interesting patterns are beginning to emerge.

Four trademark applications have been filed for Louis Vuitton Malletier (applications: Z.544393, Z.544399, Z.544392 and Z.544395) and one for Off-White LLC (Z.541790) related to the metaverse. The four applications of the French fashion brand were filed in Classes 9, 35, 36, 41 and 42. In each class, there are examples of virtual goods or services.

Some terms from the list of goods and services relating to Louis Vuitton’s marks are particularly intriguing. For example, in Class 35 the company has registered under: rental services of virtual goods, characters or places, digital collectibles or non-exchangeable tokens, online in virtual, augmented or mixed reality environments. The applicant is known for selling goods, but as we understand, in the metaverse it will also provide rental services and these will not only relate to goods, but also to virtual characters and places.

The trademark application owned by Off-White LLC was filed in Classes 9, 35, 41 and 42. There are also animated and non-animated characters but these appear in Classes 9 and 42 as part of downloadable computer software for creating, producing and modifying digital, animated and non-animated designs and characters, as well as servicing non-downloadable computer software for creating, producing and modifying digital animated and non-animated designs and characters.

If we look for trademarks related to NFTs filed with the Polish Patent Office, we see the five applications mentioned above, as well as two other marks. The first is a word sign FREEVERSE filed by Freeverse SL (application: Z.542966) and the other, purely figurative, was filed by Visa International Service Association (Z.535643). However, in these two applications, there are not many NFT-related goods or services. The only service related to NFTs in the latter application concerns the financial exchange of virtual currency, in terms of NFTs in Class 36. Freeverse SL has two services in Class 42: non-transferable token design; development of NFTs.

In the list of goods and services of the four Louis Vuitton applications, NFT is listed alone. Following the latest EUIPO communication, it shall not be accepted as such. We are curious as to whether the Polish Patent Office will follow the EUIPO’s communication and will request that lists of goods and services be amended.

So far, out of all the applications discussed, only one has been registered – that of Visa International Service Association. We will monitor the Polish Patent Office’s register carefully to see if other applications are registered and if any new applications related to the metaverse and NFTs arise. We hope that brands will soon decide to file marks related to virtual reality, and we will have the opportunity to create a list of virtual goods and services.

Klaudia Błach-Morysińska

Zaborski, Morysiński